Step-by-step trademark registration in Ukraine

Step 1: Definition of classes according to the International Classification of Goods and Services (ICGS)

A trademark is always registered for certain goods and services. The categories of goods and services are divided into 45 categories called classes, so the first step is to accurately determine the scope of the brand and its corresponding classes. The TM is protected within the selected goods and services of a certain class, and brand protection will not apply to other areas. In addition, it is not possible to add new classes or goods and services to the selected class after filing an application. As a result, the selection of classes is a key stage for successful TM registration.

Step 2: Search for TM identity and similarity (preliminary search)

Before submitting an application, it is advisable to conduct a search to see whether similar or identical TMs in the same field have already been filed for registration or registered. The presence of similar TMs may be an obstacle to registration, since TMs that are confusingly similar cannot be registered. The search will help to assess the risks of refusal of registration and help the entrepreneur to make an informed decision on filing an application for registration or making changes to the brand to increase the chances of successful TM registration.

Step 3: Preparing and submitting an application

You can register a trademark for an individual or a company. The application is submitted to the National IP Office (UANIPIO). It is worth noting that an application for a trademark in Ukraine from a non-resident must be filed through an intellectual property representative registered in accordance with the law (patent attorney).

In addition, the application must be accompanied by a power of attorney for the representative, if filed by a representative, and a separate brand image. A fee of UAH 4000 per class (UAH 3000 when filing an application online) is paid for filing an application. There may also be additional fees for filing an application in color, by multiple persons, upon completion of registration, etc. The term of trademark registration in Ukraine is not established by law and, according to the practice of recent years, is 18-24 months.

Step 4: Application registration process

UANIPIO checks the application materials for compliance with the legal requirements (formal requirements), as well as for compliance with the criteria of protectability and absence of conflict with previously registered TMs (substantive examination). If similar or identical marks are found, the applicant may receive a preliminary refusal, which is not a final decision. To continue the registration, the applicant should submit a response to the refusal with evidence of brand use. For this action, an IP specialist should be involved to take into account the peculiarities of the submitted designation and opposed TMs, the practical aspects of responding to such decisions, and the preparation of the necessary evidence. The final refusal to register a TM can be appealed to the UANIPIO’s Appeals Chamber or in court.

Step 5: Completion of registration

To complete the registration of a trademark, the applicant must pay a publication fee and state duty, which are not significant. Upon completion of registration, the owner receives a certificate in electronic form. The certificate confirms the following rights of the TM owner

• the right to exclusive use of the word and/or logo;
• the right to authorize or prohibit the use of the TM;
• the right to demand the termination of the use of the TM by other persons;
• the right to transfer the rights to the TM in whole or in part, to grant permission (license) to use the brand;
• the right to register a domain name in the .ua top-level domain.

Step 6: Actions after completion of TM registration

A trademark is valid for 10 years from the date of filing an application for registration, not from the date of registration. If the owner of the TM wishes to extend the registration for another 10 years, he or she must pay a renewal fee of UAH 12,000 for the 1st class and UAH 1,200 for each subsequent class specified in the certificate. The deadline for payment of this fee is within 6 months before the expiration of the trademark. In case of non-payment of the fee, the certificate will be recognized as invalid.

In addition, the trademark should be used exactly in the form and in relation to the goods and services for which it is registered. Otherwise, there is a risk of a court challenge to the registration, which may result in the loss of the certificate in respect of all or part of the registered goods/services. In addition, in case of continuous non-use of the TM in part or in full for 5 years, anyone may apply to the court for early termination of the certificate in whole or in part.

Conclusion

Registration of a trademark is a reliable way to protect your business from unfair competition and misuse of your brand. Proper completion of all stages of the procedure will help to avoid unnecessary difficulties and ensure legal protection of the mark in accordance with the established requirements. Barbashyn Law Firm’s team has been registering trademarks for many years and will be happy to support the registration of your brand.